“Xidan Girl” Trademark Traps in Preemptive Registration

2011/5/10

Xidan Girl, a national favorite grassroots singer, is rumored to have filed an objection against her former employer at the Trademark Appeal Board of State Administration for Industry & Commerce.

At the beginning of 2009, Ren Yueli, a subway singer in Beijing commercial district- Xidan, rose to fame overnight after a video of her singing was posted on the Internet. Netizens and media named her as the “Xidan Girl”. Under the name of “Xidan Girl Ren Yueli”, the grassroots singer started to perform on the stage and made her appearance on TV shows.

In April 2010, Ren Yueli signed with Beijing New Run Entertainment Co., Ltd. (New Run), a performance contract, which was later terminated in April 2010. In February 2011, Ren Yueli won a spot on the CCTV Spring Festival Gala as a “grassroots star”.

According to the record of “China Trademark Website”, on August 5th, 2010, New Run applied for Xidan Girl trademark registration (No. 8545741) under Category 41 Service, “Program Production, Entertainment, Performance and Live Show”. The trademark office accepted the application, but no result or preliminary examination data have been revealed.

As currently the average trademark examination period is 18 months, the Xidan Girl trademark will not be reviewed until February 2012.

According to Huang Pulin, a senior trademark lawyer, it is stipulated in the Trademark Law that, after being approved for registration by the Trademark Office, a trademark will be subject to the notice of preliminary review which lasts for three months. During the period, anyone who holds a second opinion shall be entitled to raise an objection to the Trademark Office. If the trademark is granted for registration, the prior right owner shall be allowed to raise a dispute to the Trademark Appraisal Committee for its cancellation within five years. Since the Xidan Girl trademark application has not entered such a period nor received any approval for registration, no objection or dispute will be initiated. Hence as far as procedure is concerned , Ren Yueli’s action is invalid.

Ren Yueli believes that preemptive trademark registration of her former employer constitutes infringement, which may prohibit her from further use of “Xidan Girl”, according to other reports. Huang Pulin commented that since Ren Yueli did not use “Xidan Girl” as the trademark for all of her commercial performances, “Xidan Girl” shall not be considered as the unregistered trademark of Ren Yueli. But as implied on the Internet, in media reports and TV shows, a corresponding relation has been formed between “Xidan Girl” and Ren Yueli, and “Xidan Girl” was used as the stage name of Ren Yueli. Before New Run applied for trademark registration on August 5th, 2010, the stage name had been associated with certain market popularity and was then widely known by the netizens. Therefore, Huang argues that although New Run was aware that “Xidan Girl” was Ren Yueli’s stage name, its application for trademark registration without her consent infringed Ren’s prior right of name. However, since the Trademark Office has not started examining “Xidan Girl” trademark, Ren is unable to take any legal action for the time being.